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Legal Update

Judgment identifies limits to the exclusive use of well-known trademarks

21 December 2012
Mayer Brown JSM Legal Update

In a recent judgment (Stichting BDO & another v. Banco De Oro Unibank Inc & another), the Hong Kong High Court issued a reminder that the reputation attached to a well-known trademark is not limitless but must be viewed in the context of the relevant goods or services. The Court dismissed the plaintiff accountancy firm's claim against the defendant bank for using a similar "BDO" mark.

Full update

The Plaintiffs are members of a global network of accountancy firms and hold registrations for the mark "BDO" in Hong Kong for accountancy, tax consultancy services, etc.

The Defendants provide banking and remittance services in Hong Kong, and serve mainly Filipino customers.

The Plaintiffs complained on grounds of passing off and trademark infringement that the Defendants used "BDO" in their logo, company name, signages, etc.

The Court rejected the Plaintiffs' claim. The salient findings are as follows:

Passing off


There was no misrepresentation by the Defendants to the relevant public:

  • The Plaintiffs' "BDO" mark adopted a colour scheme and an L-shaped frame, which made it look very different from the Defendants' "BDO" logo.
  • The parties were in totally different fields of business.
  • Potential customers of the Plaintiffs seeking accountancy services were expected to have a higher level of care. It would be unusual for an accountancy firm to operate on a shop front basis, so potential customers could tell the difference even if they mistakenly stepped into the Connaught Road premises of the Defendants, where the words "banking hours" and "Banco De Oro" were displayed.
  • Evidence of actual confusion adduced by the Plaintiffs (e.g., email enquiries about the Defendants mistakenly sent to the Plaintiffs) was insufficient since it was not shown that the persons confused were aware of the Plaintiffs.

Trademark infringement

Well-known trademark

  • It was not disputed that the Plaintiffs' "BDO" mark was well-known for accountancy related services. However, the Court rejected the wider claim that the fame extended to all non-similar goods or services.
  • The Court considered that the reputation attached to a well-known trademark related only to those services actually marketed by the Plaintiffs and did not extend to all services specified in the trademark registrations.
  • The Court also dismissed the suggestion that the relevant sectors of the public perceived any link between the parties' marks. Importantly, the parties' targeted consumers were quite different, with the Defendants mainly serving customers from the Philippines.
  • On the other hand, the Defendants had due cause to use the "BDO" mark, which they had been using as an acronym in the Philippines since 1977 and in Hong Kong since 2007.

Likelihood of confusion

  • The Court also found no likelihood of confusion given that the parties' respective services were neither identical nor even similar.


A number of lessons may be learned:

Trademark infringement cum passing off claims are highly fact-sensitive. All circumstances surrounding the use of a mark/name by both parties are relevant. While in recent years many such lawsuits in Hong Kong against shadow companies have resulted in favourable (default) judgments for the plaintiffs, trademark/goodwill owners should not take victory for granted.

Evidence of actual confusion, while potentially powerful in establishing liability, must come from someone who is aware of the plaintiff's fame.

Plaintiffs should act promptly as the lengthy use of a mark by the Defendants may support its use in due cause. In the BDO case, the judge found there was good cause for the Defendants to use the mark partly due to the fact that the mark had already been used by the Defendants for quite some time.

For inquiries related to this Legal Update, please contact Kenny WongEugene Low or your usual contacts with our firm.

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